Aston v Harlee Manufacturing Co.[1] is a significant legal decision involving Australian trademarklaw. It involved separate businesses which both sought to use the Tastee Freez name in Australia.
Both men had American businesses which were planning or contemplating expansion of soft serveiced milk restaurants into Australia. Aston, formerly based in Honolulu, Hawaii, United States, was a Dairy Queen operator there who moved to Sydney. Harlee Manufacturing Co., run by its founder L. S. Maranz, was a business similar to Dairy Queen, based in Illinois, USA.
The court maintained that authorship does not require the applicant be the first and true inventor of the mark. (Aston's application for special status and use of the name first, in 1952. Notice of opposition was filed by Harlee in 1956, and its own registration application was submitted in 1957.) The court further stated that trademark registration and determining its award is a question of whether anyone else has a right to use the word prior to that of the person claiming authorship.
The court followed Shell Co of Australia Ltd v Rohm and Haas Co,[2] that "right to registration depends...on proprietorship of a mark" but like Shell adheres to the English case In re Hudson's Trade Marks[3] when the "trade mark...has never [been] used...at all". Shell continued that "an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on...the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration".[2]: p. 627
Like The Seven Up Co v OT Ltd,[4] the court would not give weight to the use of the registered mark in foreign locations.
Even though Aston deliberately copied or adopted or intended the use of the registered name from a foreign country, there was no evidence of fraud.
Further, the court decided:
When once it is conceded, as a matter of law, that a person may apply for and obtain in Australia a valid registration of a trade mark registered and used in a foreign country but not used in Australia, I do not think that exceptions and qualifications should be introduced which are based merely on conceptions of commercial ethics.
References
^Aston v Harlee Manufacturing Co [1960] HCA 47, (1960) 103 CLR 391 (4 August 1960), High Court (Australia).
^ abShell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27, (1949) 78 CLR 601 (3 August 1949), High Court (Australia).
^The Seven Up Co v OT Ltd [1947] HCA 59, (1947) 75 CLR 203 (19 August 1947), High Court (Australia).
External links
"Cases and articles referring to Aston v Harlee Manufacturing Co". LawCite.
March 11, 2023
aston, harlee, manufacturing, significant, legal, decision, involving, australian, trademark, involved, separate, businesses, which, both, sought, tastee, freez, name, australia, namecourthigh, court, australiadecided4, august, 1960citation, 1960, 1960, 391cou. Aston v Harlee Manufacturing Co 1 is a significant legal decision involving Australian trademark law It involved separate businesses which both sought to use the Tastee Freez name in Australia NameCourtHigh Court of AustraliaDecided4 August 1960Citation s 1960 HCA 47 1960 103 CLR 391Court membershipJudge s sittingFullagar JBoth men had American businesses which were planning or contemplating expansion of soft serve iced milk restaurants into Australia Aston formerly based in Honolulu Hawaii United States was a Dairy Queen operator there who moved to Sydney Harlee Manufacturing Co run by its founder L S Maranz was a business similar to Dairy Queen based in Illinois USA The court maintained that authorship does not require the applicant be the first and true inventor of the mark Aston s application for special status and use of the name first in 1952 Notice of opposition was filed by Harlee in 1956 and its own registration application was submitted in 1957 The court further stated that trademark registration and determining its award is a question of whether anyone else has a right to use the word prior to that of the person claiming authorship The court followed Shell Co of Australia Ltd v Rohm and Haas Co 2 that right to registration depends on proprietorship of a mark but like Shell adheres to the English case In re Hudson s Trade Marks 3 when the trade mark has never been used at all Shell continued that an application to register a trade mark so far unused must equally with a trade mark the title to which depends on prior user be founded on the combined effect of authorship of the mark the intention to use it upon or in connection with the goods and the applying for registration 2 p 627 Like The Seven Up Co v OT Ltd 4 the court would not give weight to the use of the registered mark in foreign locations Even though Aston deliberately copied or adopted or intended the use of the registered name from a foreign country there was no evidence of fraud Further the court decided When once it is conceded as a matter of law that a person may apply for and obtain in Australia a valid registration of a trade mark registered and used in a foreign country but not used in Australia I do not think that exceptions and qualifications should be introduced which are based merely on conceptions of commercial ethics References Edit Aston v Harlee Manufacturing Co 1960 HCA 47 1960 103 CLR 391 4 August 1960 High Court Australia a b Shell Co of Australia Ltd v Rohm and Haas Co 1948 HCA 27 1949 78 CLR 601 3 August 1949 High Court Australia In re Hudson s Trade Marks 1886 32 ChD 311 The Seven Up Co v OT Ltd 1947 HCA 59 1947 75 CLR 203 19 August 1947 High Court Australia External links Edit Cases and articles referring to Aston v Harlee Manufacturing Co LawCite Retrieved from https en wikipedia org w index php title Aston v Harlee Manufacturing Co amp oldid 1100098509, wikipedia, wiki, book, books, library,
